OHIM held to have erred in finding that 'so' marks were similar

The General Court has rendered its judgment in Groupe Léa Nature SA v Office for Harmonisation in the Internal Market (OHIM) (Case T-341/13, September 23 2014). The case was an appeal of a decision of the First Board of Appeal of OHIM dated March 26 2013 in which the board had rejected an application for the registration of a figurative mark as a Community trademark (CTM).

Groupe Léa Nature filed an application for the registration of a figurative sign containing the word element 'SO’ BiO ētic' for goods in Classes 3 and 25 of the Nice Classification (including "bleaching preparations and other substances for laundry use"):

The application was published in Community Trademark Bulletin No 23/2008 of June 9 2008. The intervener, Debonair Trading Internacional, filed a notice of opposition against the registration of the mark based on a likelihood of confusion between the contested mark and earlier registered word marks containing the word element 'so…?' (one of these marks being CTM registration No 485 078).

The First Board of Appeal of OHIM found that, as the intervener was the proprietor of similar marks containing the element ‘so’, there was a likelihood of confusion between the signs in relation to identical or similar goods (Article 8(1)(b) of the Community Trademark Regulation (207/2009)). Further, there was a risk that the sale of "bleaching preparations and other substances for laundry use" would be detrimental to the reputation of the earlier marks, which cover cosmetic products, within the meaning of Article 8(5) of the regulation.

In support of its action, the applicant relied on four pleas in law, alleging:

1. an error of law in the choice of the legal basis for the board's decision, as Regulation 207/2009 was not yet applicable at the time of filing of the application;
2. an error of law in the assessment of the genuine use of the earlier marks;
3. an error in the assessment that the signs at issue were similar on the ground that the element ‘so’ was dominant; and
4. an error of law in the assessment of the conditions for the application of Article 8(5) of the regulation.

First, the General Court rejected the plea alleging an error of law in the choice of the legal basis of the board's decision. Although the application and the opposition proceedings were initiated under Regulation 40/94, that regulation was no longer applicable as the board's decision was delivered after the date of entry into force of Regulation 207/2009.

Second, the General Court rejected the applicant’s plea alleging an error of law in assessing the genuine use of the earlier marks. According to the court, genuine use of the earlier marks was sufficiently proven by a number of invoices issued by the exclusive holder of the intervener’s licence for the European Union.

As to the third plea regarding the question of similarity, the General Court observed that such assessment must, as far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given the signs, and, in particular, their distinctive and dominant elements. The General Count went on to evaluate these elements individually. It held that that the Board of Appeal had been wrong to separate the element ‘so’ in order to find that it dominated the overall impression. With regard to visual similarity, the court noted that the signs had different length and structure and, apart from the word element ‘so’, which did not dominate the overall impression, the signs were not similar. Moreover, phonetically, there were differences in length, rhythm and intonation and, therefore, the signs were phonetically similar only to a low degree. Conceptually, it was noted that the signs had different meanings, as the sign SO…? created hesitation, a question or a certain suspense, while the sign SO’ BIO ĒTIC made reference to the composition of the goods (ie, the element ‘bio’ could be perceived as a contraction of the word 'biologique' or ‘biological’, meaning 'organic') and could also be associated with moral values or with fair trade goods. Therefore, the signs were not conceptually similar.

The General Court concluded that the signs were not similar and, therefore, there was no need to undertake an assessment of the likelihood of confusion. Consequently, the third plea was upheld.

With regard to the fourth plea, the General Court merely observed that, as the signs were not similar, one of the cumulative criteria under Article 8(5) was not met, and the provision was thus not applicable. Therefore, the fourth plea was upheld.

In sum, the General Court found that there was a lack of similarity between the signs SO…? and SO’ BIO ĒTIC and, on this basis, the board's decision to reject the application was annulled.

Rune Bæk Krogh, Gorrissen Federspiel, Copenhagen